Addressing inventive step objections raised by the Australian Patent Office

Successfully overcoming an inventive step objection raised by an Examiner at the Australian Patent Office has historically been relatively straightforward. In recent years, the Patent Office has endeavoured to be tougher in the application of the inventive step tests. A recent decision includes comments from the Delegate of the Commissioner of Patents that provide guidance on the current position taken by the Patent Office, and this is valuable for responding to objections raised in Examiner’s Reports on patent applications.

Nature of the dispute

Furnware Limited is the applicant of Australian Patent Application No. 2004283634, which relates to recline mechanisms for seat backs and bases. Sebel Furniture Limited opposed grant of a patent on the application. In addition to a challenge of the inventive step, Sebel raised lack of novelty and lack of clarity grounds.

The lack of inventive step challenge

Before comparing the documents and claims in detail, the Delegate of the Commissioner of Patents addressed two preliminary requirements to the inventive step assessment as follows:
The identity of the person skilled in the art: the Delegate considered that this would be a furniture designer with possession of “all the engineering competencies relevant to the art of furniture design, and tilting mechanisms in particular”.

The common general knowledge in the art: acknowledging the very limited declaratory evidence, the Delegate considered that it could only be said with confidence that the common general knowledge in this art included providing “tilting mechanisms for seats and/or back rests in all their manifestations”.

The Delegate then considered whether the claimed invention lacked inventive step (in other words, was obvious) from two different approaches:

Was the invention obvious in light of a first prior art document (US Patent No. 2,796,920) when combined with a second prior art document (US Patent No. 4,890,886)?

Was the invention obvious in light of the second prior art document?

First approach in assessing inventive step

In order for the first approach to succeed in finding the claimed invention lacking inventive step, two separate enquiries were required. The first enquiry is whether “the person skilled in the art could reasonably be expected to have combined” the first and second documents. If the documents can be combined, then the second enquiry is whether the claimed invention would have been obvious in light of the combined disclosure of the first and second documents.

The Delegate recognized that the first document described a mechanism that possessed all but one of the features defined in the relevant claim, and indicated that this represented a fundamental difference. The Delegate found that the omitted feature was disclosed in the second prior art document. Therefore, all the features of the claimed invention were present in the two documents. In the first approach it was necessary that the first and second documents be combined to find lack of inventive step.

In addressing the first enquiry, the Delegate concluded that there was sufficient similarity in technology of the first and second documents that this requirement was satisfied. In other words, the Delegate’s opinion is that the person skilled in the art could reasonably be expected to have combined the disclosures of the documents.

Key Point 1 – Combining prior art documents in inventive step assessment:
The similarity or disparity in the technology of two (or more) prior art documents is relevant to the issue of whether the person skilled in the art could reasonably be expected to have combined the disclosures of prior art documents.

To address the second enquiry, the Delegate then asked whether it would have been obvious to fundamentally alter the mechanism disclosed in the first document to arrive at the claimed invention. This, the Delegate concluded, was not something that the person skilled in the art would be directly led to try. Consequently, the first approach failed to render the claimed invention lacking inventive step.

Key Point 2 – Fundamental alteration of prior art is unlikely to render invention obvious:
An inventive step objection may be overcome on the basis that the disclosure of a prior art document must be fundamentally altered to arrive at the claimed invention if the person skilled in the art would not be directly led to try the alteration. One example of a fundamental alteration is the incorporation of a feature into the prior art document’s disclosure.

Second approach in assessing inventive step

In the second approach, the Delegate observed that the second document disclosed the mechanism defined in the relevant claim, but that the claim was directed to a different application. In this case, the claim was to the tilting mechanism of the seat back, whereas the document only disclosed the mechanism used in tilting the seat base. The question then was: would it be obvious to deploy the disclosure of the second document in a new application? In answering this question, the Delegate observed that the second document indicated that other potential applications were envisaged, but were not explicitly stated. Consequently, the Delegate held that a person skilled in the art would be directly led to utilize the mechanism disclosed in the second document in the tilting mechanism for a seat back, and that the claimed invention lacked inventive step in light of the second document alone.

This finding of lack of inventive step is essentially implementing the principle that there is no invention in a new use for a known product. However, the Delegate’s comments suggest that in application of this principle, the language in the prior art document under consideration is relevant to the issue. It seems possible that a different conclusion may have been made had the second document not contemplated alternative applications, such that the person skilled in the art would not be directly led to the new application of the known product.

Key Point 3 – Inventive step in a new use for a known product:A new use for a known product is unlikely to be inventive, but an exception may be if the person skilled in the art would not be directly led to try the new use with the expectation of success

Further comments on the decision

The Delegate’s analysis of inventive step is based on the question of whether the person skilled in the art would, in the circumstances, be directly led to try the claimed invention in the expectation that it might well produce the desired result. This test was set out in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd1, and has subsequently been approved by the High Court of Australia.

This decision provides some guidance on how inventive step may be judged in examination before the Patent Office, in which there is often very limited evidence regarding the common general knowledge in the relevant art. The key points listed above can assist practitioners in formulating arguments to challenge inventive step (obviousness) objections raised by Examiners. However, it is important to recognize that this is the decision of a Delegate, and it is possible that Australian Courts will take a different view on these issues.

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 will remove from the legislation the requirements that documents must satisfy in order to qualify as part of the prior art for inventive step. These requirements are that the person skilled in the art must reasonably be expected to have ascertained, understood and regarded as relevant each document. The Explanatory Memorandum for this Act states that some of the current requirements will remain relevant to inventive step assessments for cases considered under the amended patent laws, and on this basis it appears that the conclusions that can be drawn from the decision will remain relevant.